Friday, June 03, 2016

Trademark issues with The Avengers

IPBiz notes that IPKat has raised the marking issue as between the 1960s tv show "The Avengers" and the use of the Avengers name in the “Marvel Cinematic Universe (MCU) films”:

What is interesting is that, in the exchange regarding the title, The Avengers, for entertainment services, there clearly had been an instance of actual confusion between my colleague and me about what entertainment program was being discussed. This Kat tried to find any instance where the production company of the television series ever sought to challenge Marvel Comics (or later, Disney, which bought Marvel Entertainment in 2009 with the intention of turning the comic series and related entertainment outlets into a movie franchise), or vice versa, but he could not. It seems that each was content to allow the other to make use of the same name, even in the face of actual confusion.

At one level, this apparent “live, and let live” situation may simply reflect the position that ultimately, whether or not to enforce one’s rights about confusion is a commercial matter for the parties concerned. “The Avengers” of the 1960’s has little commercial significance today and it is prized mainly for its cult and nostalgia value. As such, the confusion evinced by this Kat’s colleague has nothing to do about the commercial source of the two entertainment series; the 1960’s television series is simply irrelevant. For this Kat, his intention was clearly the 1960’s television series; in discussing The Avengers and Emma Peel, the 2012 movie never came to mind. As such, it would appear that the confusion was in communication rather than in the source of the respective entertainment series.


In the U.S., the primary issue is whether the similarity of the marks is likely to confuse customers about the source of the products. The customer does not need to know the name of the source (e.g., how many buyers of Entenmann's know the ultimate source is Bimbo Bakeries?), simply that there is a particular source.

With the Avengers issue, one has to identify the relevant customer body. Is it people who watch 1960s tv shows or more contemporary movies? Not likely much overlap there. And would any customer think the movies were made by the producers of the tv show?

As a general proposition, the revival of an old mark, years later, in a slightly different area is an interesting question.

In passing, cozi-tv is currently showing the Avengers tv show on broadcast television.


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